IP Case Law Analysis

Courts Still Wrestling with Trademark Functionality

April 12, 2012

Including completely aesthetic flourishes in designs for which you seek trademark protection may strengthen your case.

Utility patent for a design may be strong evidence against trademark registration even if elements of the design for which trademark protection is sought are not found in the utility patent.

Overview

In In re Becton, Dickinson and Co (Becton), the US Court of Appeals for the Federal Circuit (Federal Circuit) decision illustrates that the US Patent and Trademark Office and courts run into difficulty when analyzing designs that are, at least in part, functional.

Case Background

Becton filed a trademark application seeking registration of a design for “closures for medical collection tubes.” The application stated that this design had been used since 1989.

The Examining Attorney rejected the application on the grounds that the design was functional. Becton appealed the decision to the Trademark Trial and Appeal Board (Board), which upheld the Examining Attorney’s refusal. Becton then appealed the Board’s decision to the Federal Circuit.

Decision Analysis

In upholding the Board’s decision, the majority for the Federal Circuit emphasized the importance of a prior utility patent disclosing the utilitarian advantages of several elements of Becton’s design. If placed further emphasis on Becton’s own advertising and promotional materials, which highlighted these utilitarian elements.

Having determined that some elements of Becton’s design were functional, the Board weighed these functional elements of the design against the non-functional elements. The majority downplayed evidence of third-party designs for functionally similar products as well as evidence that Becton’s particular design was not the cheapest or most efficient design that would achieve the desired functionality.

A dissenting opinion harangued the majority for failing to give proper weight to these final two elements. The dissent argued that these elements are crucial to a functionality analysis, which should center on whether granting trademark protection for a design will put competitors at an unfair disadvantage.

The dissent also argued that the majority’s weighing of functional elements against non-functional elements was improper arguing that the proper question to ask is to what degree the mark as a whole is dictated by utilitarian concerns or is arbitrary. Because the functional aspects of this design did not dictate the non-functional elements, the dissent would have vacated and remanded the Board’s decision.

Takeaways

Unfortunately, the takeaway from this case is that courts are still wrestling with functionality in the trademark context. Looking at the majority’s opinion, parties seeking trademark protection for a design should be a aware that a prior utility patent for the same or similar design may make registration difficult. Although obtaining trademark protection for a design is desirable, parties should not rely solely on such protection and should include purely aesthetic flourishes, such as logos or distinctive colors, to obtain trademark registration.